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347 U.S.

201
74 S.Ct. 460
98 L.Ed. 630

MAZER et al.
v.
STEIN et al.
No. 228.
Argued Dec. 3, 1953.
March 8, 1954.
Rehearing Denied April 12, 1954.

See 347 U.S. 949, 74 S.Ct. 637.


Messrs. Max R. Kraus and Robert L. Kahn, Chicago, Ill., for petitioners.
Mr. George E. Frost, Chicago, Ill. (Messrs. William Freeman, Chicago,
Ill. and Charles F. Barber, Washington, D.C., on the brief), for
respondents.
Mr. Benjamin Forman, New York City, for the Register of Copyrights.
Amicus curiae by special leave of Court.
Mr. Justice REED delivered the opinion of the Court.

This case involves the validity of copyrights obtained by respondents for


statuettes of male and female dancing figures made of semivitreous china. The
controversy centers around the fact that although copyrighted as 'works of art,'
the statuettes were intended for use and used as bases for table lamps, with
electric wiring, sockets and lamp shades attached.

Respondents are partners in the manufacture and sale of electric lamps. One of
the respondents created original works of sculpture in the form of human
figures by traditional clay-model technique. From this model, a production
mold for casting copies was made. The resulting statuettes, without any lamp
components added, were submitted by the respondents to the Copyright Office
for registration as 'works of art' or reproductions thereof under 5(g) or 5(h)

of the copyright law,1 and certificates of registration issued. Sales (publication


in accordance with the statute) as fully equipped lamps preceded the
applications for copyright registration of the statuettes. 17 U.S.C. (Supp. V,
1952) 10, 11, 13, 209, 17 U.S.C.A. 10, 11, 13, 209; Rules and
Regulations, 37 CFR, 1949, 202.8 and 202.9. Thereafter, the statuettes were
sold in quantity throughout the country both as lamp bases and as statuettes.
The sales in lamp form accounted for all but an insignificant portion of
respondents' sales.
3

Petitioners are partners and, like repondents, make and sell lamps. Without
authorization, they copied the statuettes, embodied them in lamps and sold
them.

The instant case is one in a series of reported suits brought by respondents


against various alleged infringers of the copyrights, all presenting the same or a
similar question.2 Because of conflicting decisions,3 we granted certiorari. 346
U.S. 811, 74 S.Ct. 49. In the present case respondents sued petitioners for
infringement in Maryland. Stein v. Mazer, D.C., 111 F.Supp. 359. Following
the Expert decision and rejecting the reasoning of the District Court in the
Rosenthal opinion, both referred to in the preceding note, the District Court
dismissed the complaint. The Court of Appeals reversed and held the
copyrights valid. Stein v. Mazer, 4 Cir., 204 F.2d 472. 4 It said: 'A subsequent
utilization of a work of art in an article of manufacture in no way affects the
right of the copyright owner to be protected against infringement of the work of
art itself.' 204 F.2d at page 477.

Petitioners, charged by the present complaint with infringement of respondents'


copyrights of reproductions of their works of art, seek here a reversal of the
Court of Appeals decree upholding the copyrights. Petitioners in their petition
for certiorari present a single question:

'Can statuettes be protected in the United States by copyright when the


copyright applicant intended primarily to use the statuettes in the form of lamp
bases to be made and sold in quantity and carried the intentions into effect?

'Stripped down to its essentials, the question presented is: Can a lamp
manufacturer copyright his lamp bases?'

The first paragraph accurately summarizes the issue. The last gives it a quirk
that unjustifiably, we think, broadens the controversy. The case requires an
answer, not as to a manufacturer's right to register a lamp base but as to an

artist's right to copyright a work of art intended to be reproduced for lamp


bases. As petitioners say in their brief, their contention 'questions the validity of
the copyright based upon the actions of respondents.' Petitioners question the
validity of a copyright of a work of art for 'mass' production. 'Reproduction of a
work of art' does not mean to them unlimited reproduction. Their position is
that a copyright does not cover industrial reproduction of the protected article.
Thus their reply brief states:
9

'When an artist becomes a manufacturer or a designer for a manufacturer he is


subject to the limitations of design patents and deserves no more consideration
than any other manufacturer or designer.'

10

It is not the right to copyright an article that could have utility under 5(g) and
(h), note 1, supra, that petitioners oppose. Their brief accepts the copyrightability of the great carved golden saltcellar of Cellini but adds:

11

'If, however, Cellini designed and manufactured this item in quantity so that the
general public could have salt cellars, then an entirely different conclusion
would be reached. In such case, the salt cellar becomes an article of
manufacture having utility in addition to its ornamental value and would
therefore have to be protected by design patent.' It is publication as a lamp and
registration as a statue to gain a monopoly in manufacture that they assert is
such a misuse of copyright as to make the registration invalid.

12

No unfair competition question is presented. The constitutional power of


Congress to confer copyright protection on works of art or their reproductions
is not questioned.5 Petitioners assume, as Congress has in its enactments and as
do we, that the constitutional clause empowering legislation 'To promote the
Progress of Science and useful Arts, by securing for limited Times to Authors
and Inventors the exclusive Right to their respective Writings and Discoveries',
Art. I, 8, cl. 8, includes within the term 'Authors' the creator of a picture or a
statue. The Court's consideration will be limited to the question presented by
the petition for the writ of certiorari.6 In recent years the question as to
utilitarian use of copyrighted articles has been much discussed.7

13

In answering that issue, a review of the development of copyright coverage will


make clear the purpose of the Congress in its copyright legislation. In 1790 the
First Congress conferred a copyright on 'authors of any map, chart, book or
books already printed'.8 Later, designing, engraving and etching were
included; 9 in 1831 musical composition;10 dramatic compositions in 1856;11
and photographs and negatives thereof in 1865.12

14

The Act of 1870 defined copyrightable subject matter as:

15

'* * * any book, map, chart, dramatic or musical composition, engraving, cut,
print, or photograph or negative thereof, or of a painting, drawing, chromo,
statute, statuary, and of models or designs intended to be perfected as works of
the fine arts'. (Emphasis supplied.)13

16

The italicized part added three-dimensional work of art to what had been
protected previously.14 In 1909 Congress again enlarged the scope of the
copyright statute.15 The new Act provided in 4:

17

'That the works for which copyright may be secured under this Act shall
include all the writings of an author.'16

18

Some writers interpret this section as being coextensive with the constitutional
grant,17 but the House Report, while inconclusive, indicates that it was
'declaratory of existing law' only.18 Section 5 relating to classes of writings in
1909 read as shown in the margin with subsequent additions not material to this
decision.19 Significant for our purposes was the deletion of the fine-arts clause
of the 1870 Act.20 Verbal distinctions between purely aesthetic articles and
useful works of art ended insofar as the statutory copyright language is
concerned.21

19

The practice of the Copyright Office, under the 1870 and 1874 Acts and before
the 1909 Act, was to allow registration 'as works of the fine arts' of articles of
the same character as those of respondents now under challenge. Seven
examples appear in the Government's brief amicus curiae. 22 In 1910,
interpreting the 1909 Act, the pertinent Copyright Regulations read as shown in
the margin.23 Because, as explained by the Government, this regulation 'made
no reference to articles which might fairly be considered works of art although
they might also serve a useful purpose,' it was reworded in 1917 as shown
below.24 The amicus brief gives sixty examples selected at five-year intervals,
19121952, said to be typical of registrations of works of art possessing
utilitarian aspects.25 The current pertinent regulation, published in 37 CFR,
1949, 202.8, reads thus:

20

'Works of art (Class G)(a)In General. This class includes works of artistic
craftsmanship, in so far as their form but not their mechanical or utilitarian
aspects are concerned, such as artistic jewelry, enamels, glassware, and
tapestries, as well as all works belonging to the fine arts, such as paintings,
drawings and sculpture. * * *'

21

So we have a contemporaneous and longcontinued construction of the statutes


by the agency charged to administer them that would allow the registration of
such a statuette as is in question here.26

22

This Court once essayed to fix the limits of the fine arts.27 That effort need not
be appraised in relation to this copyright issue. It is clear Congress intended the
scope of the copyright statute to include more than the traditional fine arts.
Herbert Putnam, Esq., then Librarian of Congress and active in the movement
to amend the copyright laws, told the joint meeting of the House and Senate
Committees:

23

'The term 'works of art' is deliberately intended as a broader specification than


'works of the fine arts' in the present statute with the idea that there is subjectmatter (for instance, of applied design, not yet within the province of design
patents), which may properly be entitled to protection under the copyright
law.'28

24

The successive acts, the legislative history of the 1909 Act and the practice of
the Copyright Office unite to show that 'works of art' and 'reproductions of
works of art' are terms that were intended by Congress to include the authority
to copyright these statuettes. Individual perception of the beautiful is too varied
a power to permit a narrow or rigid concept of art. As a standard we can hardly
do better than the words of the present Regulation, 202.8, supra, naming the
things that appertain to the arts. They must be original, that is, the author's
tangible expression of his ideas. Compare Burrow-Giles Lithographic Co. v.
Sarony, 111 U.S. 53, 5960, 4 S.Ct. 279, 281 282, 28 L.Ed. 349. Such
expression, whether meticulously delineating the model or mental image or
conveying the meaning by modernistic form or color, is copyrightable.29 What
cases there are confirm this coverage of the statute.30

25

The conclusion that the statues here in issue may be copyrighted goes far to
solve the question whether their intended reproduction as lamp stands bars or
invalidates their registration. This depends solely on statutory interpretation.
Congress may after publication protect by copyright any writing of an author.
Its statute creates the copyright.31 It did not exist at common law even though
he had a property right in his unpublished work.32

26

But petitioners assert that congressional enactment of the design patent laws
should be interpreted as denying protection to artistic articles embodied or
reproduced in manufactured articles.33 They say:

27

'Fundamentally and historically, the Copyright Office is the repository of what


each claimant considers to be a cultural treasure, whereas the Patent Office is
the repository of what each applicant considers to be evidence of the advance in
industrial and technological fields.'

28

Their argument is that design patents require the critical examination given
patents to protect the public against monopoly. Attention is called to Gorham
Mfg. Co. v. White, 14 Wall. 511, 20 L.Ed. 731, interpreting the design patent
law of 1842, 5 Stat. 544, granting a patent to anyone who by 'their own
industry, genius, efforts, and expense, may have invented or produced any new
and original design for a manufacture * * *.' A pattern for flat silver was there
upheld. 34 The intermediate and present law differs little. 'Whoever invents any
new, original and ornamental design for an article of manufacture may obtain a
patent therefor, * * *' subject generally to the provisions concerning patents for
invention. 171, 66 Stat. 805, 35 U.S.C.A. 171. As petitioner sees the effect
of the design patent law:

29

'If an industrial designer can not satisfy the novelty requirements of the design
patent laws, then his design as used on articles of manufacture can be copied by
anyone.'

30

Petitioner has furnished the Court a booklet of numerous design patents for
statuettes, bases for table lamps and similar articles for manufacture, quite
indistinguishable in type from the copyrighted statuettes here in issue.35
Petitioner urges that overlapping of patent and copyright legislation so as to
give an author or inventor a choice between patents and copyrights should not
be permitted. We assume petitioner takes the position that protection for a
statuette for industrial use can only be obtained by patent, if any protection can
be given.36

31

As we have held the statuettes here involved copyrightable, we need not decide
the question of their patentability. Though other courts have passed upon the
issue as to whether allowance by the election of the author or patentee of one
bars a grant of the other, we do not.37 We do hold that the patentability of the
statuettes, fitted as lamps or unfitted, does not bar copyright as works of art.
Neither the Copyright Statute nor any other says that because a thing is
patentable it may not be copyrighted. We should not so hold.38

32

Unlike a patent, a copyright gives no exclusive right to the art disclosed;


protection is given only to the expression of the ideanot the idea itself.39
Thus, in Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841, the Court held that a

copyrighted book on a peculiar system of bookkeeping was not infringed by a


similar book using a similar plan which achieved similar results where the
alleged infringer made a different arrangement of the columns and used
different headings. The distinction is illustrated in Fred Fisher, Inc. v.
Dillingham, D.C., 298 F. 145, 151, when the court speaks of two men, each a
perfectionist, independently making maps of the same territory. Though the
maps are identical each may obtain the exclusive right to make copies of his
own particular map, and yet neither will infringe the other's copyright.
Likewise a copyrighted directory is not infringed by a similar directory which
is the product of independent work.40 The copyright protects originality rather
than novelty or inventionconferring only 'the sole right of multiplying
copies.'41 Absent copying there can be no infringement of copyright.42 Thus,
respondents may not exclude others from using statuettes of human figures in
table lamps; they may only prevent use of copies of their statuettes as such or as
incorporated in some other article. Regulation 202.8, supra, makes clear that
artistic articles are protected in 'form but not their mechanical or utilitarian
aspects.' See Stein v. Rosenthal, D.C., 103 F.Supp. 227, 231. The dichotomy of
protection for the aesthetic is not beauty and utility but art for the copyright and
the invention of original and ornamental design for design patents. We find
nothing in the copyright statute to support the argument that the intended use or
use in industry of an article eligible for copyright bars or invalidates its
registration. We do not read such a limitation into the copyright law.
33

Nor do we think the subsequent registration of a work of art published as an


element in a manufactured article, is a misuse of the copyright. This is not
different from the registration of a statuette and its later embodiment in an
industrial article.

34

'The copyright law, like the patent statutes, makes reward to the owner a
secondary consideration.' United States v. Paramount Pictures, 334 U.S. 131,
158, 68 S.Ct. 915, 929, 92 L.Ed. 1260. However, it is 'intended definitely to
grant valuable, enforceable rights to authors, publishers, etc., without
burdensome requirements; 'to afford greater encouragement to the production of
literary (or artistic) works of lasting benefit to the world." Washingtonian Pub.
Co. v. Pearson, 306 U.S. 30, 36, 59 S.Ct. 397, 400, 83 L.Ed. 470.

35

The economic philosophy behind the clause empowering Congress to grant


patents and copyrights is the conviction that encouragement of individual effort
by personal gain is the best way to advance public welfare through the talents
of authors and inventors in 'Science and useful Arts.' Sacrificial days devoted to
such creative activities deserve rewards commensurate with the services
rendered.

36

Affirmed.

37

Opinion of Mr. Justice DOUGLAS, in which Mr. Justice BLACK concurs.

38

An important constitutional question underlies this casea question which was


stirred on oral argument but not treated in the briefs. It is whether these
statuettes of dancing figures may be copyrighted. Congress has provided that
'works of art', 'models or designs for works of art', and 'reproductions of a work
of art' may be copyrighted, 17 U.S.C 5, 17 U.S.C.A. 5; and the Court holds
that these statuettes are included in the words 'works of art'. But may statuettes
be granted the monopoly of the copyright?

39

Article I, 8 of the Constitution grants Congress the power 'To promote the
Progress of Science and useful Arts, by securing for limited Times to Authors *
* * the exclusive Right to their respective Writings * * *.' The power is thus
circumscribed: it allows a monopoly to be granted only to 'authors' for their
'writings.' Is a sculptor an 'author' and is his statute a 'writing' within the
meaning of the Constitution? We have never decided the question.

40

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed.
349, held that a photograph could be copyrighted.

41

Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47


L.Ed. 460, held that chromolithographs to be used as advertisements for a
circus were 'pictorial illustrations' within the meaning of the copyright laws.
Broad language was used in the latter case, '* * * a very modest grade of art has
in it something irreducible, which is one man's alone. That something he may
copyright unless there is a restriction in the words of the act.' 188 U.S., at page
250, 23 S.Ct. at page 300. But the constitutional range of the meaning of
'writings' in the field of art was not in issue either in the Bleistein case nor in F.
W. Woolworth Co. v. Contemporary Arts, 344 U.S. 228, 73 S.Ct. 222, 97 L.Ed.
276, recently here on a writ for certiorari limited to a question of damages.

42

At times the Court has on its own initiative considered and decided
constitutional issues not raised, argued, or briefed by the parties. Such, for
example, was the case of Continental Illinois Nat. Bank & Trust Co. v.
Chicago, Rock Island R. Co., 294 U.S. 648, 667, 55 S.Ct. 595, 601, 79 L.Ed.
1110, in which the Court decided the constitutionality of 77 of the
Bankruptcy Act, 11 U.S.C.A. 205, though the question was not noticed by
any party. We could do the same here and decide the question here and now.
This case, however, is not a pressing one, there being no urgency for a decision.

Moreover, the constitutional materials are quite meager (see Fenning, The
Origin of the Patent and Copyright Clause of the Constitution, 17 Geo.L.J. 109
(1929)); and much research is needed.
43

The interests involved in the category of 'works of art,' as used in the copyright
law, are considerable. The Copyright Office has supplied us with a long list of
such articles which have been copyrightedstatuettes, book ends, clocks,
lamps, door knockers, candlesticks, inkstands, chandeliers, piggy banks,
sundials, salt and pepper shakers, fish bowls, casseroles, and ash trays. Perhaps
these are all 'writings' in the constitutional sense. But to me, at least, they are
not obviously so. It is time that we came to the problem full face. I would
accordingly put the case down for reargument.

17 U.S.C. (Supp. V, 1952) 4, 17 U.S.C.A. 4:


'The works for which copyright may be secured under this title shall include all
the writings of an author.'
Id., 5:
'The application for registration shall specify to which of the following classes
the work in which copyright is claimed belongs:
'(g) Works of art; models or designs for works of art.
'(h) Reproductions of a work of art.'
Errors of classification are immaterial. See Note 19, infra.

An unreported action, Stein v. Zuckerman and DuBeshter, was pending in the


Eastern District of New York. Note, 66 Harv.L.Rev. 877, 878, n. 8. We are
advised that it was dismissed by consent February 24, 1953.

Stein v. Expert Lamp Co., 7 Cir., 188 F.2d 611, Stein v. Expert Lamp Co.,
D.C., 96 F.Supp. 97 was the first action brought. Through an accident in
presentation, the trial court determined the case as though the copyright was on
a statuette with lamp attachments. It held the statuettes not copyrightable
because this 'was evidence of the practical use' intended. 96 F.Supp. at page 98.
On petition for reconsideration, it held the presence or absence of the
attachments immaterial. Stein v. Mazer, D.C., 111 F.Supp. 359, 361; Rosenthal
v. Stein, 9 Cir., 205 F.2d 633, 634. The Court of Appeals for the Seventh
Circuit affirmed on the ground that the Copyright Act 'does not refer to articles

of manufacture having a utilitarian purpose nor does it provide for a previous


examination by a proper tribunal as to the originality of the matter offered for
copyright * * *.' Stein v. Expert Lamp Co., 188 F.2d 611, 613.
Stein v. Rosenthal, D.C., 103 F.Supp. 227, was a second infringement case. It
was there held 'Protection is not dissipated by taking an unadulterated object of
art as copyrighted and integrating it into commercially valuable merchandise.'
103 F.Supp. at page 230. On appeal, the Court of Appeals for the Ninth Circuit
affirmed, saying 'The theory that the use of a copyrighted work of art loses its
status as a work of art if and when it is put to a functional use has no basis in
the wording of the copyright laws and there is nothing in the design-patent laws
which excludes a work of art from the operation of the copyright laws.'
Rosenthal v. Stein, 9 Cir., 205 F.2d 633, 635.
In Stein v. Benaderet, 109 F.Supp. 364, 365, a district court of Michigan held
that it is the 'intent and purpose' of the designer which determines whether an
object is copyrightable as a work of art. The court said plaintiffs should have
applied for a design patent and held for defendants. An appeal is pending now
in the Court of Appeals for the Sixth Circuit.
The opinions in the above cases and those of the District Court and the Court of
Appeals in the present litigation deserve careful reading.
4

In this case the Register of Copyrights participated as amicus curiae and


supported respondents. Through the Solicitor General he has also filed a brief in
this Court, and participated in the oral argument. 346 U.S. 882, 74 S.Ct. 143.

We do not reach for constitutional questions not raised by the parties. Chicago
& G.T.R. Co. v. Wellman, 143 U.S. 339, 345, 12 S.Ct. 400, 402, 36 L.Ed. 176;
People of the State of New York ex rel. Rosevale Realty Co. v. Kleinert, 268
U.S. 646, 651, 45 S.Ct. 618, 619, 69 L.Ed. 1135; C.I.O. v. McAdory, 325 U.S.
472, 475, 65 S.Ct. 1395, 1397, 89 L.Ed. 1741. The fact that the issue was
mentioned in argument does not bring the question properly before us. Herbring
v. Lee, 280 U.S. 111, 117, 50 S.Ct. 49, 51, 74 L.Ed. 217.
No question of our jurisdiction emerges. Chicot County Drainage Dist. v.
Baxter State Bank, 308 U.S. 371, 60 S.Ct. 317, 84 L.Ed. 329. Compare Kalb v.
Feuerstein, 308 U.S. 433, 60 S.Ct. 343, 84 L.Ed. 370, and Continental Illinois
Nat. Bank & Trust Co. v. Chicago, R.I. & P.R. Co., 294 U.S. 648, 667, 55 S.Ct.
595, 601, 79 L.Ed. 1110.
Compare on the constitutional question the following: Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349, upheld the
copyright of a photograph unanimously. It was said: 'By writings in that clause

is meant the literary productions of those authors, and congress very properly
has declared these to include all forms of writing, printing, engravings,
etchings, etc., by which the ideas in the mind of the author are given visible
expression.' 111 U.S. at page 58, 4 S.Ct. at page 281.
'These findings, we think, show this photograph to be an original work of art,
the product of plaintiff's intellectual invention, of which plaintiff is the author,
and of a class of inventions for which the constitution intended that congress
should secure to him the exclusive right to use, publish, and sell, as it has done
by section 4952 of the Revised Statutes.' 111 U.S. at page 60, 4 S.Ct. at page
282.
Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249 250, 23 S.Ct.
298, 299300, 47 L.Ed. 460, upheld a copyright on circus posters. The Court
said:
'We shall do no more than mention the suggestion that painting and engraving,
unless for a mechanical end, are not among the useful arts, the progress of
which Congress is empowered by the Constitution to promote. The
Constitution does not limit the useful to that which satisfies immediate bodily
needs. * * * Personality always contains something unique. It expresses its
singularity even
in handwriting, and a very modest grade of art has in it something irreducible,
which is one man's alone. That something he may copyright unless there is a
restriction in the words of the act.'
Kalem Co. v. Harper Bros., 222 U.S. 55, 63, 32 S.Ct. 20, 22, 56 L.Ed. 92,
involved pirating by motion pictures of the copyrighted dramatic rights of a
book. This Court said:
'It is argued that the law, construed as we have construed it, goes beyond the
power conferred upon congress by the Constitution, to secure to authors for a
limited time the exclusive right to their writings. Art. I, 8, cl. 8. It is suggested
that to extend the copyright to a case like this is to extend it to the ideas, as
distinguished from the words in which those ideas are clothed. But there is no
attempt to make a monopoly of the ideas expressed. The law confines itself to a
particular, cognate, and well-known form of reproduction. If to that extent a
grant of monopoly is thought a proper way to secure the right to the writings,
this court cannot say that Congress was wrong.'
See also Schreiber v. Thornton, D.C., 17 F. 603, reversed on other grounds,
Thornton v. Schreiber, 124 U.S. 612, 613, 8 S.Ct. 618, 31 L.Ed. 577.

See Fenning, The Origin of the Patent and Copyright Clause of the
Constitution, 17 Geo.L.J. 109; 2 Story, Constitution 5th ed.), c. XIX.
Trade-Mark Cases, 100 U.S. 82, 94, 25 L.Ed. 550. Congress had passed a
trade-mark act under the Patent and Copyright Clause. A unanimous Court held
this effort to protect trade-marks was unconstitutional.
'The ordinary trade-mark has no necessary relation to invention or discovery. *
* * If we should endeavor to classify it under the head of writings of authors,
the objections are equally strong. In this, as in regard to inventions, originality
is required. And while the word writings may be liberally construed, as it has
been, to include original designs for engraving, prints, &c., it is only such as are
original, and are founded in the creative powers of the mind. The writings
which are to be protected are the fruits of intellectual labor, embodied in the
form of books, prints, engravings, and the like.' The trade-mark does not
'depend upon novelty, invention, discovery,
or any work of the brain. It requires no fancy or imagination, no genius, no
laborious thought. It is simply founded on priority of appropriation.'
See as to commerce, 100 U.S. at pages 9598; Robert, Commentary on the
Lanham Trade-Mark Act, 15 U.S.C.A. ( 811113, 1948) p. 265.
6

National Licorice Co. v. National Laber Relations Board, 309 U.S. 350, 357,
note 2, 60 S.Ct. 569, 574, 84 L.Ed. 799; General Talking Pictures Corp. v.
Western Electric Co., 304 U.S. 175, 546, 58 S.Ct. 849, 82 L.Ed. 1273; Crown
C. & S. Co. v. Ferdinand Gutmann Co., 304 U.S. 159, 58 S.Ct. 842, 82 L.Ed.
1265, and cases cited; Gunning v. Cooley, 281 U.S. 90, 50 S.Ct. 231, 74 L.Ed.
720. The policy is incorporated in Rule 38(2), Revised Rules of the Supreme
Court of the United States, 28 U.S.C.A., and the practice of bringing 'additional
questions into a case' has been condemned recently in Irvine v. California, 347
U.S. 128, 129, 74 S.Ct. 381.

Ball, Law of Copyright and Literary Property (1944), 390; Howell, Copyright
Law (1952), 130; 1 Ladas, The International Protection of Literary and Artistic
Property (1938), 247; Weil, Copyright Law (1917), 227; Derenberg, Copyright
No-Man's Land: Fringe Rights in Literary and Artistic Property, 1953
Copyright Problems Analyzed (CCH) 215; Pogue, BorderlandWhere
Copyright and Design Patent Meet, 52 Mich.L.Rev. 33; Notes, 21
Geo.Wash.L.Rev. 353; 66 Harv.L.Rev. 877; 27 Ind.L.J. 130. See Report of the
Copyright Committee, Board of Trade, October 1952, Artistic Copyright and
Industrial Designs, pp. 82 et seq.

1 Stat. 124.

2 Stat. 171.

10

4 Stat. 436.

11

11 Stat. 139.

12

13 Stat. 540. Between 1789 and 1904, there were in all some twenty-five laws
dealing with copyrights. Salberg, Copyright in Congress (1905), 8993.

13

86, 16 Stat. 212. This Act also vested control of records relating to copyrights
in the Librarian of Congress and provided he should administer the law. Id.,
85.

14

In connection with the phrase in the 1870 Act 'intended to be perfected as works
of the fine arts,' see the 1874 amendatory Act, 18 Stat. 78, and Bleistein v.
Donaldson Lithographing Co., 188 U.S. 239, 23 S.Ct. 298, 47 L.Ed. 460.
Section 3 contained the following provision: 'That in the construction of this
act, the words 'Engraving,' 'cut' and 'print' shall be applied only to pictorial
illustrations or works connected with the fine arts, and no prints or labels
designed to be used for any other articles of manufacture shall be entered under
the copyright law, but may be registered in the Patent Office.'
This was repealed in 1939 and the following enacted:
'SEC. 2. Section 5(k) of the Act entitled 'An Act to amend and consolidate the
Acts respecting copyright' approved March 4, 1909, is hereby amended to read:
'(k) Prints and pictorial illustrations including prints or labels used for articles of
merchandise." 53 Stat. 1142. This was an amendment to 5(k) of the Act of
1909, 35 Stat. 1077. It is to be noted, however, that the 1909 Act did not
conform to the 1874 language, but the present Act, 17 U.S.C.(Supp. V, 1952)
5(k), 17 U.S.C.A. 5(k), does contain the amendatory language of the 1939
Act.

15

S.Rep.No.6187, 59th Cong., 2d Sess., p. 4:


'The existing statutes attempt specifications which are unfortunate because
necessarily imperfect and requiring frequent additions to cover new forms or
new processes. The bill in its general definition substitutes a general term, 'all
the works of an author.' The term used in the constitution is 'writings.' But
Congress has always construed this term broadly, and in doing so has been
uniformly supported by judicial decision. It has, for instance, interpreted it as
authorizing subject-matter so remote from its popular significance as
photographs, paintings, statuary, and dramas, even if unwritten.

'As thus interpreted, the word 'writings would to-day in popular parlance be
more nearly represented by the word 'works'; and this the bill adopts; referring
back, however, to the word 'writings' by way of safe anchorage, but regarding
this as including 'all forms of record in which the thought of an author may be
recorded and from which it may be read or reproduced."
Burrow-Giles Lithographic Co. v. Sarony, 1884, 111 U.S. 53, 4 S.Ct. 279, 28
L.Ed. 349, has held that photographs were copyrightable in spite of the
argument that the Constitution only specified protection for 'writings' of an
'author.' This decision made clear that 'writings' was not limited to chirography
and typography.
16

35 Stat. 1076.

17

Weil, Copyright Law (1917), 214; Howell, The Copyright Law (3d ed. 1952),
8.

18

H.R.Rep.No.2222, 60th Cong., 2d Sess. 10. The report is not very clear on the
point, however.

19

'The application for registration shall specify to which of the following classes
the work in which copyright is claimed belongs:
'(a) Books, including composite and cyclopaedic works, directories, gazetteers,
and other compilations;
'(b) Periodicals, including newspapers;
'(c) Lectures, sermons, addresses, prepared for oral delivery;
'(d) Dramatic or dramatico-musical compositions;
'(e) Musical compositions;
'(f) Maps;
'(g) Works of art; models or designs for works of art;
'(h) Reproductions of a work of art;
'(i) Drawings or plastic works of a scientific or technical character;
'(j) Photographs;
'(k) Prints and pictorial illustrations:

'Provided, nevertheless, That the above specifications shall not be held to limit
the subject-matter of copyright as defined in section four of this Act, nor shall
any error in classification invalidate or impair the copyright protection secured
under this Act.' 35 Stat. 1076.
Subsection (k) was amended by the addition of the words 'including prints or
labels used for articles of merchandise' in 1939. 53 Stat. 1142. See note 14,
supra. Two more classes '(l) Motion-picture photoplays' and '(m) Motion
pictures other than photoplays' were added in 1912. 37 Stat. 488.
20

See note 14, supra, for repeal of clause defining engraving cuts and prints in
terms of 'fine art.'

21

Title 17 of the United States Code entitled 'Copyrights' was codified into
positive law in 1947 without change in the pertinent provisions. 61 Stat. 652,
17 U.S.C.(Supp. V., 1952) 4, 5, 17 U.S.C.A. 4, 5.

22

E.g., 'A female figure bearing an urn in front partly supported by drapery
around the head. The figure nude from the waist up and below this the form
concealed by conventionalized skirt draperies which flow down and forward
forming a tray at the base. Sides and back of skirt in fluted form. The whole
being designed as a candlestick with match tray. The figure standing and bent
forward from hips and waist.'

23

'Works of art.This term includes all works belonging fairly to the so-called
fine arts. (Paintings, drawings, and sculpture.)
'Productions of the industrial arts utilitarian in purpose and character are not
subject to copyright registration, even if artistically made or ornamented.' Rules
and Regulations for the Registration of Claims to Copyright, Bulletin No. 15
(1910), 8.

24

'Works of art and models or designs for works of art. This term includes all
works belonging fairly to the so-called fine arts. (Paintings, drawings, and
sculpture.)
'The protection of productions of the industrial arts, utilitarian in purpose and
character, even if artistically made or ornamented depends upon action under
the patent law; but registration in the Copyright Office has been made to protect
artistic drawings notwithstanding they may afterwards be utilized for articles of
manufacture.' 37 CFR, 1939, 201.4(7).

25

E.g., 'Lighting fixture design. By F. E. Guitini. (Bowl-shaped bracket


embellished with figure of half-nude woman standing in bunch of flowers.)

Copyright December 28, 1912. Registration number G 42645. Copyright


claimant: Kathodion Bronze Works, New York.'
26

Great Northern R. Co. v. United States, 315 U.S. 262, 275, 62 S.Ct. 529, 534,
86 L.Ed. 836.

27

United States v. Perry, 146 U.S. 71, 74, 13 S.Ct. 26, 27, 36 L.Ed. 890.

28

Arguments before the Committees on Patents of the Senate and House of


Representatives, conjointly, on S. 6330 and H.R. 19853, To Amend and
Consolidate the Acts Respecting Copyright, 59th Cong., 1st Sess., June 69,
1906, p. 11. The statement is applicable to the 1909 Act since 5(g) and (h)
of the 1909 Act are identical with the same sections of S. 6330 and H.R. 19853.
Although there were other hearings and reports (see 51 House Committee
Hearings before Committee on Patents (19061912), on Consolidating and
Revising the Copyright Laws; H.R.Rep.No.2222, 60th Cong., 2d Sess. 3), this
statement of Mr. Putnam is the only explanation of the change in statutory
language, though S.Rep.No. 6187, 59th Cong., 2d Sess., p. 11, refers to 'works
of art' as a new designation and mentioned the deletion of 'fine' from the
category.

29

Cf. H. C. White Co. v. Morton E. Converse & Son Co., 2 Cir., 20 F.2d 311.

30

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60, 4 S.Ct. 279, 282, 28
L.Ed. 349; Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 250, 23
S.Ct. 298, 300, 47 L.Ed. 460; Louis De Jonge & Co. v. Breuker & Kessler Co.,
C.C., 182 F. 150, 152; F. W. Woolworth Co. v. Contemporary Arts, 1 Cir., 193
F.2d 162, 164; see same case, 344 U.S. 228, 73 S.Ct. 222, 97 L.Ed. 276;
Yuengling v. Schile, C.C., 12 F. 97, 100; Schumacher v. Schwencke, C.C., 25
F. 466; Pellegrini v. Allegrini, D.C., 2 F.2d 610.

31

Wheaton and Donaldson v. Peters and Grigg, 8 Pet. 591, 661, 8 L.Ed. 1055;
Fox Film Corp. v. Doyal, 286 U.S. 123, 127, 52 S.Ct. 546, 76 L.Ed. 1010.

32

Lord Brougham and Lord St. Leonards in Jefferys v. Boosey, IV H.L.C. 815,
968, 979, 10 Eng.Rep. 681, 741, 745.

33

Two cases are relied upon to support the position of the petitioners. Taylor
Instrument Companies v. Fawley-Brost Co., 7 Cir., 139 F.2d 98, and Brown
Instrument Co. v. Warner, 82 U.S.App.D.C. 232, 161 F.2d 910. These cases
hold that the Mechanical Patent Law and Copyright Laws are mutually
exclusive. As to overlapping of Design Patent and Copyright Laws, however, a
different answer has been given by the courts. Louis De Jonge & Co. v.
Breuker & Kessler Co., C.C., 182 F. 150, affirmed on other grounds in 3 Cir.,

191 F. 35, and 235 U.S. 33, 35 S.Ct. 6, 59 L.Ed. 113; see also cases cited in
note 37, infra.
34

This Court said, 14 Wall. at page 525: 'It is a new and original design for a
manufacture, whether of metal or other material; * * * to be either worked into,
or on, any article of manufacture; or a new and original shape or configuration
of any article of manufactureit is one or all of these that the law has in view.
And the thing invented or produced, for which a patent is given, is that which
gives a peculiar or distinctive appearance to the manufacture, or article to which
it may be applied, or to which it gives form. * * * It therefore proposes to
secure for a limited time to the ingenious producer of those appearances the
advantages flowing from them. * * * It is the appearance itself, therefore, no
matter by what agency caused, that constitutes mainly, if not entirely, the
contribution to the public which the law deems worthy of recompense.'

35

E.g., Design Patent 170.445 Base for table lamps, a fanciful statuette of a girl
standing in front of a high rock in bathing costume.

36

The English Copyright Act, 1911, 22, 4 Halsbury's Statutes of England (2d
ed.) p. 800, does not protect designs registrable under the Patents and Designs
Act (now the Registered Designs Act, 1949, 17 Halsbury's Statutes of England
(2d ed.), unless such designs are not used or intended to be used as models or
patterns to be multiplied by any industrial process. The Board of Trade has
ruled that a design shall be deemed to be used as a model or pattern to be
multiplied by industrial process within the meaning of 22 when the design is
reproduced or intended to be reproduced in more than fifty single articles. The
Copyright (Industrial Designs) Rules, 1949, No. 2367, 1 Statutory Instruments
1949, p. 1453.

37

See Rosenthal v. Stein, note 3, supra; In re Blood, 57 App.D.C. 351, 23 F.2d


772; Korzybski v. Underwood & Underwood, Inc., 2 Cir., 36 F.2d 727; William
A. Meier Glass Co. v. Anchor Hocking Glass Corp., D.C., 95 F.Supp. 264, 267;
Jones Bros. Co. v. Underkoffler, D.C., 16 F.Supp. 729; Louis De Jonge & Co.
v. Breuker & Kessler Co., C.C., 182 F. 150; 66 Harv.L.Rev. 884; 52
Mich.L.Rev. 33; cf. Taylor Instrument Companies v. Fawley-Brost Co., 7 Cir.,
139 F.2d 98.

38

See, Pogue, BorderlandWhere Copyright and Design Patent Meet, 52


Mich.L.Rev. 33, 58.

39

F. W. Woolworth Co. v. Contemporary Arts, 1 Cir., 193 F.2d 162; Ansehl v.


Puritan Pharmaceutical Co., 8 Cir., 61 F.2d 131; Fulmer v. United States, 103
F.Supp. 1021, 122 Ct.Cl. 195; Muller v. Triborough Bridge Authority, D.C., 43
F.Supp. 298.

40

Sampson & Murdock Co. v. Seaver-Radford Co., 1 Cir., 140 F. 539. See,
Annotation 26 A.L.R. 585.

41

Jewelers Circular Pub. Co. v. Keystone Publishing, 2 Cir., 281 F. 83, 94, 26
A.L.R. 571.

42

White-Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1, 28 S.Ct. 319, 52 L.Ed.
655; Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 249, 23 S.Ct.
298, 299, 47 L.Ed. 460; Arnstein v. Porter, 2 Cir., 154 F.2d 464, 468469;
Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 2 Cir., 191 F.2d 99, 103;
Ansehl v. Puritan Pharmaceutical Co., supra; Christie v. Cohan, 2 Cir., 154
F.2d 827.

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